DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
This Office action addresses newly added claims 26-38. The claims are rejected under 35 USC 112(b). The claims are also newly rejected under 35 USC 102 and/or 103 as necessitated by amendment. Accordingly, this action is made final.
Terminal Disclaimer
The terminal disclaimer filed on April 27, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of serial no. 19/001803 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 112
Claims 26-38 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 26 recites the term “aqueous polymer material,” and claim 31 recites the term “aqueous vinylidene fluoride (VDF) polymer”. The scope of these terms is indefinite. Specifically, it is unclear if the limitations are actually reciting water to be present, or if they are reciting that that the polymers have been processed in water, and the water does not actually have to be present. Correction is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 28 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 28 recites each of the four possible locations for the one or two adhesive layers. The claim does not narrow the location(s) to something less than all possible locations for the layer(s). Accordingly, the claim fails to further limit the parent claim.
Claim Rejections - 35 USC § 102/103
Claims 26-31 and 34-38 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Honda et al (US 20200266407).
Regarding claims 26 and 31, Honda et al. is directed to a separator comprising a porous substrate and an adhesive layer formed on one or both sides of the substrate (abstract). The adhesive layer comprises a PVDF polymer comprising PVDF-HFP copolymer resins “A” and “B” (abstract). In Example 1, it is taught that the separator has a Gurley value of 213 s/100cc and a film thickness of 13 micrometers. The porous substrate in Example 1 has a Gurley value of 160 s/100cc and a thickness of 9 microns. Thus, the adhesive layer has a thickness of 4 microns and a Gurley value of 53 s/100cc (213-160). Thus, the claimed value of “P” (increase in permeability per unit area of coating layer) is 13.25 s/100cc/µm (53/4). Also in Example 1 (see Table 1), the dry adhesive strength of the separator to the positive electrode is 0.083 N/15mm (see also [0217]). Thus, the claimed value of “A” is 5.33 N/m. Accordingly, the ratio C=A/P is 0.42 for Example 1, anticipating the claimed range. Other disclosed values of C include: 0.49 (Example 2), 0.45 (Example 3), 0.83 (Example 5) and 0.59 (Example 6). These are all anticipatory of the claimed range. Regarding claims 26 and 31, which recite the adhesive layer “comprises an aqueous polymer” and “comprises an aqueous vinylidene fluoride (VDF) polymer”, the limitations are interpreted as product-by-process limitations as the water appears to be subsequently removed from the separator and is not part of the final product (see [0042] of instant specification). It is noted that the patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Furthermore, once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). See also MPEP §2113.
Accordingly, the structure of the separator disclosed by Honda appears to be identical to the instant claims. In the alternative, if not identical, the structure of the separator of Honda is so similar to the instant claims that any such differences would be obvious.
Regarding claim 27, the adhesive layer comprises the “aqueous polymer material” as claimed. Regarding claims 28 and the adhesive layer formed on one or both sides of the substrate (abstract). Regarding claims 29 and 34, the percentage of VDF in the copolymer is 85 mol % or more (abstract; HFP is maximum 15%). Regarding claims 30 and 36, a heat-resistant layer may be formed on the substrate comprising a heat-resistant polymer and optionally a ceramic filler ([0087]). Regarding claim 35, the adhesive layer may comprise a filler ([0100]). Regarding claims 37 and 38, the separator is used in a lithium battery between the positive and negative electrode ([0171]).
Claims 32 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Honda et al. as applied to claims 26-31 and 34-38 above, and further in view of Ogata et al (US 20170098809).
Honda et al. do not expressly teach the ratio of an alpha-PVDF within a crystalline region of the PVDF as recited in claim 33, in particular that the ratio is greater than 30% and less than 70% (claim 33).
Ogata et al. is directed to a separator for a lithium battery having a PVDF based resin coating on a substrate ([0016], [0051]). The PVDF based resin can contain two PVDF-HFP copolymer resins having two different amounts of HFP ([0028]). The PVDF based resin comprises a ratio of alpha-PVDF to a total amount of crystalline PVDF (alpha plus beta) of between 10-65 mol% (abstract, [0051]).
Therefore, the invention as a whole would have been obvious to one skilled in the art at the time of filing because the artisan would be motivated to use a ratio of alpha-PVDF within a crystalline region (alpha plus beta) of the PVDF of Honda et al. of 10-65%, thereby rendering the claimed ranges obvious. In [0011], Ogata et al. teach that setting proportions of alpha and beta crystal forms to specific ranges “allows the porous layer to be used for a constituent member of a nonaqueous secondary battery separator having excellent shutdown characteristics.” Accordingly, the artisan would be motivated to use a ratio of alpha-PVDF within a crystalline region (alpha plus beta) of the PVDF of 10-65%.
Regarding claim 32, which recite an overall crystallinity of a raw material of a PVDF copolymer of 10-50%, it is submitted that a skilled artisan would recognize this value as a result-effective variable that can be routinely optimized as it concerns PVDF coatings for separators. For example, [0053] of Ogata et al. discusses the contributions to separator physical properties each type of crystalline PVDF makes. As part of the determination of overall properties of the separator, the skilled artisan would also take into account amorphous PVDF in conjunction with the crystalline varieties, such that the total ratio of crystalline varieties in the PVDF would be optimizable. It has been held that the discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art. In re Boesch, 205 USPQ 215 (CCPA 1980).
Response to Arguments
9. Applicant’s arguments filed April 27, 2026 have been fully considered but they are not persuasive. Initially, Applicants state that Honda’s PVDF resins A and B are not aqueous polymers. As noted above, the terminology “aqueous polymer” is considered to be indefinite herein. This issue notwithstanding, the limitation has been interpreted as a product-by-process limitation as set forth in the rejection above. No discernible difference is apparent between “aqueous (VDF) polymer” and the VDF polymer of Honda et al.
Applicant further notes that the present invention possesses favorable results when the battery is tested at 1C after 500 cycles. Initially, it is noted that such arguments do not apply to a rejection under 35 USC 102 as has been made herein (to claims 26-31 and 34-38). The Examiner further notes that in the present application, Example 2 uses an oil-based PVDF HFP polymer, and achieves favorable results. Therefore, any argument that the “aqueous” polymer achieves unexpected or favorable results by itself would not be persuasive. It is noted that in the prosecution of copending application 19/001803, the indicated allowable subject matter encompassed the limitations of both of present claims 32 and 33, as it was determined that the prior art failed to teach or fairly suggest the benefit resulting from the C value, the crystallinity, and the alpha value being within specified ranges. However, as none of the instant claims via their claim dependencies encompass this subject matter, the claims are not commensurate in scope with the showing in the Tables.
Conclusion
10. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan Crepeau whose telephone number is (571) 272-1299. The examiner can normally be reached Monday-Friday from 9:30 AM - 6:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Nicole Buie-Hatcher, can be reached at (571) 270-3879. The phone number for the organization where this application or proceeding is assigned is (571) 272-1700. Documents may be faxed to the central fax server at (571) 273-8300.
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/Jonathan Crepeau/
Primary Examiner, Art Unit 1725
July 16, 2026
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